International Patenting Strategies: Cost-Effectively Expand Your Market and Boost Your TTO’s Revenues
Originally presented August 5, 2010

In today’s fast-moving global market, your international patenting strategy can determine how products are developed, valuation of technologies and start-ups, licensing strategy, total revenue potential, and ultimately total return on investment.

However, filing international patents is a complicated, costly, and time-consuming endeavor. Strict filing deadlines, multiple attorneys and patent agents, translations, documentation and compliance rules, and hefty fees can make international patenting a daunting arena, but the potential for further monetizing your IP in global markets is also compelling.

That’s why Technology Transfer Tactics is teaming up with foreign-patent filing experts Jeffrey Shieh of inovia and Susanne Hollinger, Ph.D., J.D. of Emory University for this high-level program that has been specifically designed to help simplify the foreign patent filing process while respecting your budget and expanding your global IP footprint.

Invite your entire patenting, licensing and legal staff to listen to this 90-minute distance learning program:

International Patenting Strategies: Cost-Effectively Expand Your Market and Boost Your TTO’s Revenues

Take a look at what we’ll cover in this interactive session:

• Patent Cooperation Treaty vs. Paris Convention filing methods
• An overview of the PCT and European validation processes, and a discussion on translation quality
• Foreign filing best practices
• 7 rules for reducing foreign filing costs
• An overview of US IP Trends

You’ll also get an insider’s view into Emory’s foreign patent filing practices including:

• Overview:
  • Provisional filings
  • Technology type and conversion decision (PCT vs. US)
  • Fast Track/PP Highway
• Licensee issues
  • Licensing activities pre-nationalization (when does a licensee start to pay and what does Emory ‘expect’ when making decisions on nationalization)
  • What do licensees expect to have done
• Nationalization Decisions
  • Licensed vs. unlicensed case
  • Technology types
• Validation Decisions
  • Licensed vs. unlicensed case
  • Technology types/is there a product
• Overall cost-benefit

Your Panel of Experts:

Jeffrey Shieh, JD, is a Senior Patent Attorney at inovia, counseling the company and its clients on all facets of the international patenting process. He is a registered U.S. patent attorney and previously worked at the law firms of Cooper & Dunham LLP and Amster Rothstein & Ebenstein LLP. At both firms, he specialized in the prosecution of biotechnology and pharmaceutical patents in the USPTO and globally.

Susanne Hollinger, PhD, JD, is Associate Director and Chief Intellectual Property Officer for Emory University’s Office of Technology Transfer. Prior to joining the office, Susanne spent seven years at the law firm of King & Spalding focusing on patent prosecution and intellectual property counseling. During her tenure at King & Spalding, Susanne assisted a variety of clients in technology evaluation, drafted and prosecuted dozens of U.S. and international patent applications and assisted clients in U.S. and international litigations and opposition proceedings. In connection with investments and acquisitions, she developed strategies for maximizing global intellectual property protection and drafted and reviewed licensing, joint venture and acquisition agreements.